Should You Trademark That?

When and how to trademark brand assets.

From a catchy slogan to a slick logo, many pieces of your brand can be trademarked. Trademarks help protect your business, but it's important to understand what elements can be trademarked and which truly warrant legal protection.

"Trademarks protect the distinctive elements used to identify the source of goods or services. Essentially, they represent your brand in the marketplace," says Wade Savoy, an intellectual property attorney and partner at Patent GC in Boston, Mass.

When considering whether to file for trademark protection, think strategically about your long-term goals, key markets, and the role your brand will play in your growth plan. It's preferable to conduct a trademark search before you choose your brand name and elements to make sure they are not already in use. Trademark rights in the U.S. are granted on a "first to use" basis. "A company can claim rights to a mark, even if an application for trademark registration was never filed with the United States Patent and Trademark Office (USPTO), simply by proving it was the first user of the mark," explains Savoy.

Why trademark?

When you trademark something, it becomes a business asset with an associated brand equity. This can be important for business valuation. Trademarks also help protect against competition. "Trademark registrations allow you to enforce your rights in the mark and prevent others from polluting or crowding the marketplace," says Daliah Saper, trademark attorney and principal of Saper Law, an intellectual property, social media, and business law firm in Chicago, Ill. "If you don't get the trademark registration, you still have trademark rights, but they are only valid in the territory you've sold in."
For example, if you're doing business in Alabama and a similar company in California begins to use your slogan, you won't be able to prevent them from doing so without a registered trademark.

How to trademark

Most likely, you'll want to partner with an experienced trademark attorney to help you navigate the process. Additionally, consult USPTO's website for guidance.

"The first thing we do when we sit down with a company is take stock of all their different brand assets," says Saper. "Then we do a trademark search to make sure there aren't any other names in the same class of goods and services that are confusingly similar."

You also have to make sure your mark is legally protectable. Names that are too generic cannot be trademarked. Then you can file a "use-in-commerce" or "intent-to-use" (ITU) application with USPTO. "Use-in-commerce" applications are for businesses that are already using the mark in the sale or transport of their goods or services. ITU applications are based on your intention to use the mark.

"An ITU is a powerful tool to help protect a business from competitors who might adopt the same or similar mark," says Savoy. "It gives a business some breathing room to develop and launch a product or service without fear that a competitor will scoop the mark."

Both processes typically takes nine to 12 months, he says. The baseline fees for filing are minimal – about $300. But legal costs vary. On the less-expensive end, firms charge a flat fee in the $1000 - $1500 range, but the price depends on your desired level of support and the extensiveness of the trademark search.

"A trademark professional can work with you to determine which type of application best suits your needs," says Savoy. "He or she will consider many factors, including the timing of the product or service launch, the available budget, and the business's tolerance for risk."

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